INTELLECTUAL PROPERTY LAW independently of each other, applicant who files

first will get the patent

- Pertains to intangible assets resulting from the
3. DISCLOSURE- applicant shall disclose the
creative work of individual or organizations
invention in a manner sufficiently clear and
- Creation of the mind such as:
complete
a. Inventions
- Quid pro qou principle- protection in exchange for
b. Literary and artistic works
disclosure
c. Symbols, names, images, and designs used
in commerce
4. CONDITIONAL- patents are granted only upon
- The legal rights which results from intellectual
compliance with the criteria of patentability
activities in the industrial, scientific, literary, and
5. LIMITED RIGHTS
artistic fields.
PATENTABLE INVENTIONS

- Any technical solution of a problem in any field of

LEGAL/ CONSTITUTIONAL BASIS.
human activity which Is new, involved an inventive
- Article 14, Section 13, 1987 Constitution step and is industrially applicable. It may be or may
be relate to a product, process, or an improvement
“The state shall protect and secure the exclusive rights of any of the foregoing.
of scientists, inventors, artists and other gifted citizens
to their intellectual property and creations, particularly CRITERIA FOR PATENTABILITY
when beneficial to the people for such period as may be 1. NOVELTY- NEW. invention shall not be considered
provided by the law.” new it forms part of a prior art
- Prior art- everything which has been available to
the public everywhere in the world, before the filing
COVERAGE OF INTELLECTUAL PROPERTY RIGHTS date or the priority date of the application claiming
1. Copyright and related rights invention
2. Trademarks and service rights - To bring new design and technologies to the public
3. Geographic indications
4. Industrial design 2. INVOLVE INVENTIVE STEP- if, having regarded prior
5. Patents to art, it is not obvious to a person skilled in the art ,
6. Layout designs(topography) of integrated circuits at the time of the filing date or priority date of the
7. Protection of undisclosed Information (TRIPS application claiming invention

3. Industrially applicable- an invention that can be

produced and used in any industry. Invention is not
PATENTS
merely theoretical but also has practical purpose.
- To encourage inventors to disclose information/
inventions or useful knowledge
- PUROSES: foster invention, promote disclosure of NOVELTY
invention, for this invention to become available to
the public GR: when a work has already been made available to
the public, it shall be non-patentable for absence of
novelty.
BASIC PATENT PRINCIPLES (TFDCL) XPN: DOCTRINE OF NON-PREJUDICIAL DISCLOSURE
1. TERRITORIAL- patents are only valid in the The disclosure of information contained in the
country or region in which they have been application during the 12-month period before the
granted filing date or the priority date of the application if such
2. FIRST-TO-FILE- when 2 or more persons have was disclosure was made by:
made the invention separately and
1. The inventor
2. A patent office and the information was contained;
Pursuant to employment: in case the employee made
a. In another application filed by the inventor and
the invention in the course of hs employement contract
should have not been disclosed by the office; or
the patent shall belong to;
b. In an application filed without the knowledge or
consent of the inventor by a third party which a. The employee, if the inventive activity is not
obtained the information directly or indirectly from part of his regular duties even if the employee
the inventor uses his time, facilities and materials of the
3. A third party who obtained the information directly employer
or indirectly from the investor. b. The employer, if inventive activity is part of the
regular duties, unless there is an agreement,
express or implies to the contrary
NON PATENTABLE INVENTIONS
PATENT REGISTRATION
1. Plant varieties or animal breeds or essentially
Procedure may be summarized as follows:
biological process for the production of plants or
animals. This provision shall not apply to micro- 1. Filling of the application
organisms and non-biological processes. 2. Accordance of the filing date
2. Aesthetics creations 3. Formality examination
3. Discoveries, scientific theories and mathematical 4. Classification and search
methods 5. Publication of application
4. Schemes, rules. And methods in performing mental 6. Substantive Examination
acts, playing games or doing business, and program 7. Grant of patent
computers 8. Publication upon grant
5. Anything which is contrary too public order or 9. Issuance of certificate
morality
6. Methods for treatment of the human or animal PATENT APPLICATION
body and The patent application shall be in Filpino or English and
7. In the case of drugs and medicines, mere discovery shall contain the following:
of a new form or new property of a known
substance which does not result in the a. A request or grant of a patent
enhancement of the efficacy of the substance b. Description of the invention
c. Drawings necessary for the understanding of
OWNERSHIP OF PATENTS the invention
Sec. 28 RIGHT TO A PATENT d. One or more claims
e. An abstract
- Right to a patent belongs to the inventor, his heirs
or assigns. When 2 or more persons have jointly
made an invention, the right to a patent shall GROUNDS FOR CANCELLATION OF PATENT
belong to them jointly.
- Patent rights may be assigned or transferred, Any interested party may petition to cancel any patent
however, for it to be valid, it must be in writing and or any claim or parts of claim any of the following
duly notarized grounds.

1. The invention is not new or patentable

INVENTION CREATED PURSUANT TO A COMMISSION 2. The patent does not disclose the invention in a
manner sufficiently clear and complete
Pursuant to commission: the person who commissions 3. Contrary to public order or moral
the work shall own the patent, unless otherwise 4. Patent is found invalid in an action for infringement
provided in the contract 5. The patent includes matters outside the scope of
the disclosure contained in the application
PATENT APPLICATION BY PERSONS NOT HAVINFG THE invention/ This allow parallel importation for drugs
RIGHT TO A PATENT and medicines.
b. The right to import the drugs and medicines shall be
Remedies of a person with a right to a patent
available to any government agency or any private
If a person other than the applicant is declared by a final 3rd party
court order or decision as having the right to a patent,
he may within 3 months after such decision has become
final: 2. The act is done privately and n a non-commercial
scale purpose
1. Prosecute the application as his own
3. Exclusive for experiments only of the invention for
2. File new patent application
scientific purposes or educational purposes
3. Request for the application to be refused
4. In case of drugs and medicines, where the act
4. Seek cancellation of the patent
includes, testing, using making or selling the
5. Award actual and other damages
invention including data related thereto, solely for
Time to file action: within 1 year from the date of the purposes reasonably related to the
publication development and submission of information by
government regulatory agencies required under the
law of the Philippines or of another country that
RIGHTS WHEN GRABTE A PATENT regulates the manufacture, construction, use of sale
of any product.
1. In case of product – right to restraint, prohibit and 5. OTHER LIMITATIONS
prevent any unauthorized person or entity from
making, using and offering the sake, selling or PRIOR USER
importing the product Person other than the applicant, who in good faith,
2. In case of process- right to restraint, prohibit and started using the invention I the Philippines or
prevent any unauthorized person or entity from undertaken serious preparation to use the same, before
manufacturing, dealing in, using. Offering for sale, the filing date or priority date of the application shall
selling or importing any product obtained directly or have the right to continue the use thereof, but this right
indirectly from such process shall only be transferred or assigned further with his
3. Rights to assign the patent, transfer by succession enterprise or business.
and to conclude licensing contracts.
USE BY GOVERNMENT- for public use
the rights conferred by a patent application takes effect
after publication in the official gazette.

LIMITATIONS OF PATENT RIGHTS DOCTRINE OF EXHAUSTION

The owner of patent has no right to prevent third - also known as doctrine of first sale
parties from making, using, offering for sale, selling or - provides that the patent holder has control over the
importing a patented product in the following first sale of his invention. He has the opportunity to
circumstances: receive the full consideration for his invention from
his sale. Hence he exhausts his rights in the future
1. Using the patented product after it has been put on control of his invention
the market in the Philippines by the owner of the - upon first sale, exhausted na lahat rights to patent.
product with his express consent Subsequent sale, you do not have control
a. In case of drugs and medicines, the said limitation
applies after drug or medicine has been introduced
in the Philippines or elsewhere in the world by the
PATENT INFRINGEMENT (Violation of rights)
patent owner or by any party authorized to use the
- Making, using, offering for sale selling or importing
a patented product or a product obtained directly
or indirectly from a patented process or the USE of
patented process without the authorization of the
patentee

PATENT MAY EITHER BE:

1. LITERAL INFRINGMENT- exists if an accused device

falls directly within the scope of property
interpreted claims (parehong-pareho)

2. BY EQUIVALENTS

- DOCTRINE OF EQUIVALENTS
An infringement also occurs when a device
appropriates a prior invention by incorporating its
innovative concept and, despite some modification
and change, performs substantially the same
function in substantially the same way to achieve
the same results. Function-means-and-results-test

REDEMEDIES OF THE OWNERS OF PATENTS AFAINS

INFRINGERS

- File civil action for infringement

- Criminal action for infringement- if infringement is
repeated; Criminal action prescribes 3 years from
the commission of the crime
- Administrative remedy- where the amount of
damages claimed is not less than 200,000
- Destruction of infringing material –upon court order

DEFENSES IN ACTION FOR INFRINGEMENT

1. Invalidity for patent

2. Any of the grounds for cancellation
3. Prescription

EFFECTIVITY OF PATENT

20 YEARS NON-RENEWABLE
 RIGHTS OVER TRANDEMARK COFERRED

- The rights in a mark shall be acquired through

registration with Intellectual Property Office (IPO).
TRADEMARKS
The filing date of an application is the operative act
- Mark means any visible sign capable of to acquire trademark rights
distinguishing the goods (trademark) or services - Rights only acquired upon registration of the mark.
(service mark) of an enterprise and shall include
REGISTRATION
stamped or marked container of goods
- Prior use is no longer a condition precedent for
registration (Requirement) of trademarks, service
REQUIREMENTS FOR A MARK TO BE REGISTERED marks or trade name.
- Declaration of Actual use- within 3 years from the
- Must be visible filing if the application. (need for actual use)
- Capable of distinguishing one’s goods and services
from another
DURATION OF EFFECTIVITY OF TRADEMARK
REGISTRATION
Visible sign may be:
- 10 years, subject to indefinite renewals of 10 years
a. Words each
b. Letters - The registrant is required to file a declaration of use
c. Numberals after 3 years of filing an application and also every
d. Figures/pictures 5th year anniversary to IPO. Otherwise, the mark
e. Shapes shall be removed from the register by IPO
f. Colors
g. Logos
h. Three dimensional NON-REGISTRABLE MARKS
i. Objects
1. Immoral. Deceptive or scandalous matters
j. Combinations
2. Matter which may disparage or falsely suggest a
connection with persons or any business.
3. Contrary to public or morality.
DISTINCTIVENESSS OF A MARK 4. Marks similar to a Flags/coat of arms of nations
MARKS WHICH MAY BE REGISTERED 5. Names, Portraits or signature of a living person,
XPN; with consent
- Any word, name, symbol, emblem, device, figure, 6. Names, portraits or signature of a deceased
sign, phrase or any combination thereof except president of the Philippines
those enumerated under sec123, IPC XPN: with written consent of his/her living
widow
7. Identical with a registered mark belonging to a
TRADE NAME- identifies or distinguishes the business different proprietor or a mark with an earlier filing
enterprise, registration is not necessary or priority date, in respect of
a. The same goods or services
TRADEMARK- identifies or distinguishes the goods or
b. Closely related to goods or services
services, registration is required
c. If it nearly resembles such a mark as to be likely
COLECTIVE MARK- mark or trade name used by the deceive or cause confusion
members of a cooperative, an association or other
*FIRST TO FILE RULE APPLICABLE
collective group or organization. E.g., halal certified.
8. Misleading Marks
9. Generic terms
10. Color alone b. Confusion of business- as to the origin of such
11. shapes dictated by technical factors goods
12. Descriptive terms
13. Identical with an internationally well-known mark,
whether or not it is registered here, used for TESTS OF CONFUSION
identical or similar goods or services
14. Identical with an international well known mark 1. Dominancy test- focuses on the prevalent
which is registered in the Philippines with respect to (dominant) features of the competing marks
non-similar goods or services. Provided that the 2. Totally test- determined on the basis of visual,
interests of the owners of the registered mark are aural, connotative comparisons and overall
likely to be damaged by such use. impressions engendered by the mars in controversy
as they are encountered in marketplace.
- Considering the totality of the mark and
marketplace.
RIGHTS OF A TRADEMARK OWNER
3. Idem Sonans Rule- aural effects of the words and
1. Right to exclusive use of the mark letters contained in the marks are also considered in
2. Right to prevent others from use of an identical determining the issue of confusing similarity. (Pag
mark for the same, similar or related goods or binigkas magkatunog)
services
DOCTRINE OF SECONDARY MEANING
TERRITORIALITY PRINCIPLE
- Simply states that although there is a word or a
GR: Trademarks registration abroad shall not be valid phrase that is originally incapable of appropriation
and binding here in the Philippines either because it is descriptive, geographical by
nature, if, used for so long, it can acquire secondary
XPN: Well-known marks,
meaning and could be subjected to trademark
TRADEMARK INFRINGEMENT

- Use without consent of the trademark owner of

TRADEMARK UNFAIR
any reproduction, counterfeit, copy or colorable
COMPETITION
limitation of any registered mark or tradename Unauthorized use of Passing off of one’s
- Such use is likely to cause confusion or mistake or to trade mark goods as those of
deceive purchasers or others as to the source or another
origin of such goods or services or identify of such Fraudulent intent is Fraudulent intent is
business. unnecessary necessary
GR: Prior registration Registration is not
TRADEMARK INFRINGEMENT ELEMENTS
of the trademark us a necessary
1. Ownership of a trademark through registration pre-requisite to the
2. That the trademark is reproduced, counterfeited, action
copied or colorable imitated by another XPN: Well-known
marks
Counterfeit- imitated/ as is ginaya but fake

Colorable- may konting binago

3. No consent by the trademark owner or assignee

4. Use in connection with the sale, offering for sale,
advertising of any such goods, business or services
or those related thereto.
5. Likelihood of confusion
a. Confusion of goods- as to goods themselves
 3. Any official texts of a legislative, administrative or
legal nature as well as any of official translation
thereof
4. Pleadings
5. Decision of courts and tribunals
COPYRIGHT 6. Any work of the government of the Philippines
- A right over literary or artistic works which are 7. TV programs, format of TV programs
original intellectual creations in the literary and 8. Systems of bookkeeping
artistic domain protected from the moment of 9. Statutes
creation

RIGHTS OF COPYRIGHT OWNERS

COPYRIGHTABLE WORKS 1. Economic Rights- the right to carry out, authorize or
prevent the following acts:
1. Literary and artistic works a. Reproduction of the work or substantial portion
a. Books, pamphlets, articles and other writings thereof
b. Lectures, sermons, addresses, dissertations b. Carryout derivative work
c. Letters c. First distribution of the original and each copy of
d. Dramatic choreo the work by sale or any other forms of transfer of
e. Musical compositions ownership
f. Works of art d. Rental rights
g. Periodicals and newspapers e. Public display
h. Works relative to geography and topography, f. Public performance
architecture or science g. Other communications to the public
i. Works in applied art
j. Works of a scientific or technical character WORK TERM OF PROTECTION
k. Photographic works Literary and artistic Life of the author + 50 years
works after death
l. Audiovisual works and cinematographic works
Derivative works
m. Pictorial illustrations and advertisements
Joint Authorship Life of the last surviving
n. Computer programs
author + 50 years after
o. Other literary, scholarly, scientific and artistic woks. death
Anonymous or 50 years from date it is
pseudonymous works lawfully published
2. Derivative Works If before of period, identity
a. Dramatizations, translations, adaptations, is revealed or no longer in
adbridgements, arrangements and other doubt, rule on literary and
alterations of literary artistic works joint authorship shall apply
b. Collection of literary, scholarly or artistic Work of applied art 25 years from date of
works and compilations of data and other making
materials which are original by reason of Photographic works If published- 50 years after
the selection or coordination or Audiovisual works publication
arrangement of their contents. Unpublished- 50 years from
the making
Sound recordings and W50 years from the end of
performances the year which recording
NON-COPYRIGHTABLE WORKS Incorporated therein took place
1. Idea, procedure, system, method or operation,
concept, principle, discovery or mere data as such
2. News of the day and other items of press
information
 XPN: unless otherwise
provided in the agreement.

2. Moral rights- for reasons of professionalism and

propriety the author has the right:
a. To require that the authorship of the works
attributed to him (attribution right/paternirty
right)
b. To make any alterations of his work prior yo or
withhold it from publication
c. To preserve integrity of work, object any
distortion, manipulation, or other modification
which would be prejudicial to his honor or
reputation.
d. To restrain the use of his name with respect to
any work not of his own creation or in a
distorted version of his work (right against false
attribution)

DURATION OF MORAL RIGHTS

- “During the lifetime of the author and in
perpetuity after his death”- paternity right/right of
attribution.

EXPIRATION OF COPYRIGHT
- Upon expiration, trasnfer to public domain

Type of work Owner

Original literary and Author of the work
artistic works
Joint ownership Co-authors in case of joint
authorship, in the absence of
agreement
NOTE: if works of joint
authorship consists of parts
that can be used separately,
then the author of each part
shall be the original owner of
the copyright, in the part that
he has created
Audiovisual work GR: producer, author of the
scenario, composer of music,
film director, and the author
of the work so adapted
Unauthorized and unfair: already copyright
infringement